Trademark and Copyright
We recognize our clients need to protect their business, product and brand identities. Our trademark and copyright attorneys provide strategic advice to clients on preparing, prosecuting, monetizing and enforcing their trademark portfolios. As a truly global firm, our expertise spans international borders and all industries including computer software and other technology, entertainment, pharmaceuticals, manufacturing, consumer products, retail and financial services. Our experienced attorneys take the time to learn the business objectives of each client and strategically provide advice based on their unique needs. We have represented numerous high profile companies and individuals in relation to trademark and copyright issues, both in the U.S. and across borders. Our attorneys provide support across the full range of trademark and copyright legal services, including:
Licensing, Preparation, and Prosecution
We guide clients through the entire trademark process from clearance to preparation to prosecution. We manage trademark portfolios for companies of all sizes, both foreign and domestic. Similarly, we prepare and prosecute copyright registrations through the U.S. Copyright Office and internationally where required.
Licensing, Preparation and Prosecution
- Representation of large multinational pharmaceutical company in relation to extensive trademark clearance and prosecution for the infant care division.
- Drafting and successfully prosecuting numerous utility patent applications in the mechanical and electromechanical arts and writing legal opinions on the validity and possible infringement of patents in these fields.
- Representation of a manufacturer of electronic candles in patent and trademark prosecution.
- Representation of a scuba diving company with trademark registration.
- Representation of national baking company, Hostess Brands Inc., in trademark cancellation actions before the U.S. Patent and Trademark Office.
- Negotiation of multiple trademark and copyright agreements for an internationally known private historic home.
- Representation of a well-known robotics company in connection with the registration of a trademark.
We assist clients in developing plans for utilizing and protecting their intellectual property portfolios, including securing and maintaining trademark rights, providing brand management advice, and developing monetarization strategies. We also provide advice to clients on fair use of copyrighted subject matter and negotiate and draft licensing agreements where appropriate.
- Representation of an internationally famous automobile brand in its trademark enforcement strategy in the United States.
- Protection of the intellectual property interests of a world-renowned music group through policing and enforcement strategies.
- Representation of a top Chinese internet company in managing its trademark portfolio in North America.
- Representation of DJI (Dajiang Innovations), a leading drone company, in patent and trademark portfolio management and dispute resolution.
- Management of an international policing program for a client's well-known clothing brand, including advice on initiating opposition and cancellation actions.
- Management of design patent portfolios involving footwear and wristwatches.
- Representation of a fortune 500 food products company regarding monetization of a famous trademark on breakfast cereal.
We regularly represent clients in trademark and copyright disputes before the United States International Trade Commission (ITC), the Patent Trial and Appeal Board, the Trademark Trial and Appeal Board, and in U.S. district courts, including at trial and on appeal. We address issues including trademark and copyright infringement, false advertising, cybersquatting, domain name disputes, and pursue enforcement actions where necessary.
- Representation of a medical device company in federal trademark, false advertising, and unfair competition actions.
- Representation of Bridgestone’s U.S. entities in an International Centre for Settlement of Investment Disputes (ICSID) claim against Panama, obtaining a landmark ruling which found for the first time that trademark licenses may comprise an “investment.”
- Litigation of numerous intellectual property cases involving copyright, trademark, gray-market and cybersquatting issues for companies including 3M, AOL, Platinum Technology and the DGA.
- Representation of a software application service provider, successfully defending and countersuing a competitor for copyright infringement relating to software codes, including recovery of our attorney’s fees.
- Defending Foxconn against a breach of contract claim by a competitor for millions in the U.S. District Court for the Northern District of California. Counseling Foxconn in a potential eight-figure trademark dispute avoiding suit.
- Representation of Fastbuy, a Chinese E-commerce company, in a trademark dispute.
- Representation of a major Chinese retail company in a trademark licensing dispute.
- Handling a trademark infringement lawsuit by a famous New York City restaurant against a major New York corporation, which concluded with a fast and favorable settlement for the restaurant.
- Representation of a financial services client in obtaining the rejection of a preliminary injunction in a trademark infringement action involving identical marks in different businesses.
- Obtaining a decision articulating the scope of termination rights under the Copyright Act in connection with a dispute over the works of John Steinbeck.
- Representation of a major ticket broker in obtaining a preliminary injunction on copyright infringement and Digital Millennium Copyright Act claims involving the unauthorized use of computer programs to purchase event tickets online.
- Obtaining the reversal of a summary judgment and applied the parody defense in a trademark infringement and right of publicity action involving the name and likeness of Elvis Presley.
- Successfully settled a copyright infringement claim on software for identifying foreign exchange trading.
- Representation of Foxit, a multilingual PDF software company, in various intellectual property disputes.
- Obtaining preliminary and permanent injunction against a copyright and trademark infringement of a famous jewelry manufacturer.
- Representation of an early-stage Silicon Valley software developer in connection with a trademark dispute.
- Representation of online retailers in multiple litigations against a leading global software company for copyright and trademark infringement claims, involving sales of computer operation systems, server and enterprise database management software.
- Representation of a leading global retailer in multiple trademark litigations.
- Representation of a software and hardware service provider in a high-profile federal court copyright and false advertising action brought by a major U.S. OEM, including pursuit of antitrust counterclaims.
- Representation of an arts institute in connection with a copyright dispute.
Rimon Attorneys With Expertise in Trademark and Copyright Include:
Jill H. Berliner
International, Corporate, Sports, Entertainment, and Recreation
Laura M. Chavkin
Intellectual Property, Litigation
Corporate, Intellectual Property, International, Litigation, Sports, Entertainment, and Recreation, Technology
David I. Greenbaum
Intellectual Property, International, Sports, Entertainment, and Recreation
Litigation, Intellectual Property, FinTech, Cryptocurrencies, and Blockchain
Patrick Kuehl, Jr
Litigation, Intellectual Property, Technology
Intellectual Property, Litigation, Technology, International
Litigation, Intellectual Property
Intellectual Property, International
Samuel (Sandy) B. Sterrett, Jr.
Corporate, Intellectual Property, International, Technology, Education, Universities, and Endowments
Ivan L. Tjoe
Intellectual Property, Litigation, Sports, Entertainment, and Recreation, Technology, International
Maxim “Mac” Waldbaum
Technology, Education, Universities, and Endowments, International, Sports, Entertainment, and Recreation, Intellectual Property, Litigation